Monday, June 10, 2013

The PTO refused registration of the mark shown below [THE MOSQUITO PATCH disclaimed], finding it to be merely descriptive of "insect-repellants" under Section 2(e)(1). In other words, even the design portion of the mark was merely descriptive, and the mark as a whole was not distinctively stylized. The Applicants appealed. How do you think this came out? In re Ronald Bennett and Jacob Fakouri, Serial No. 85485633 (May 13, 2013) [not precedential].

The Board, of course, must consider the mark as a whole when determining mere descriptiveness. By their disclaimer, Applicants conceded the mere descriptiveness of the phrase THE MOSQUITO PATCH. The question, then, was whether the composite mark was merely descriptive.

Applicants feebly argued that the mosquito logo could be used in connection with a number of products and services, "such as a fly swatter, insecticide for plants, exterminator services," etc. Moreover, urged Applicants, the word "patch" may refer to a garden patch, or a patch on clothing to cover up a stain or a hole in a garment. The Board didn't bite. The applied-for mark is not to be considered in the abstract, but in the context of the identified goods. Clearly, the mark conveys information about Applicants' goods: their function is to repel mosquitoes.

Applicant also pointed to seven third-party registrations for marks incorporating images of an insect and the universal prohibition symbol, for insect repellant and extermination services. Examining Attorney Dawn Han countered with five registrations in which the universal symbol and/or a realistic depiction of a bug are/is disclaimed.

The Board pointed out that prior decisions in other applications are not binding on the Board. However, "third-party registrations featuring the same or similar goods as applicants' goods are probative evidence on the issue of descriptiveness where the relevant word or term is disclaimed." Moreover, the design portion of Applicants' mark is merely descriptive of an important feature of the goods: they repel mosquitoes. The applied-for mark "thus comprises two merely descriptive elements that in combination retain their descriptive significance in relation to the goods."

Finally, the Board concluded that the degree of stylization in the applied-for mark "is not sufficiently striking, unique, or distinctive so as to create a commercial impression separate and apart from the other components of the mark."

3 Comments:

Do you agree with the concession that the phrase THE MOSQUITO PATCH is merely descriptive for inspect repellent? It could be interpreted in various ways - a patch you put on a mosquito, a patch made from a mosquito, a patch that looks like a mosquito, a patch where one would find a mosquito ... or is this a feeble argument as well?

The interpretation of the phrase has to be made in the context of the goods, not in the abstract. When considered with 'insect-repellants', the applicants apparently recognized that the phrase described the purpose of their product. Presumably the were considering insect-repellant in patch form. Other meanings of the phrase, divorced from the goods, are irrelevant.